Opinion
1:04CV850.
March 1, 2006
ORDER
This matter is before the court on Plaintiff Netalog, Inc.'s (Netalog or Plaintiff) motion to compel, etc (docket no. 59). Defendant has responded in opposition to the motion, and Plaintiff has filed its reply. In this posture, the matter is ripe for disposition.
This is primarily a patent and trademark infringement action. Netalog is a North Carolina corporation that markets and sells an entire line of computer and digital music player accessories. A substantial part of Netalog's business addresses the growing market for MP3 player accessories, particularly accessories for the many versions of Apple's iPod products. Netalog's claims arise from Defendant's importation, manufacture, use, sale, and offer for sale of an alleged single infringing product — Griffin's "RoadTrip." The "RoadTrip" product is an FM transmitter and power supply/charging assembly for Apple's iPod and iPod mini MP3 players.
This discovery dispute centers on Defendant's reliance on advice-of-counsel defense to willful patent infringement. The motion seeks an order of the court that 1) Defendant answer deposition questions as part of its Rule 30(b)(6) deposition regarding advice of counsel it received from litigation counsel regarding the patent-in-suit (the so-called "'085 patent"), 2) attorney Mark Patterson answer deposition questions regarding legal advice provided by litigation counsel regarding the patent-in-suit, and 3) the production of documents relating to all legal advice provided by litigation counsel regarding the patent-in-suit. As noted, Defendant opposes the motion.
Plaintiff argues convincingly that this court has decided that, in disputes of this nature, a defendant's reliance on advice of counsel defense "waives attorney-client privilege with respect to the entire subject matter of the waiver. . . ." Akeva, LLC v. Mizuno Corp., 243 F. Supp.2d 418 (M.D.N.C. 2003). Moreover, on this same issue, other courts have followed this court's reasoning. See, e.g., Convolve, Inc. v. Compaq Computer Corp., 224 F.R.D. 98 (S.D.N.Y. 2004); Verizon California, Inc. v. Ronald A. Katz Tech. Licen., L.P., 266 F. Supp.2d 1144 (C.D. Calif. 2003). For this reason, this court is persuaded that the motion should be granted.
The Convolve court rejected the position that Defendant takes in this dispute, that is, disclosure should be limited only to so-called "contradictory opinions." 224 F.R.D. at 104-05. Likewise, this court rejects this approach.
Accordingly, the motion to compel (docket no. 59) is GRANTED. Depositions permitted under this order (Griffin's re-convened deposition and Mark Patterson's deposition) should be completed no later than March 31, 2006. Document production required under this order should be completed no later than March 17, 2006.
While neither side makes anything of the question, it is appropriate to note that courts do not require production of un-communicated work product of trial counsel. See Convolve, 224 F.R.D. at 106-07; Akeva, 243 F. Supp.2d at 424.